BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 GERK v. COTTRINGER ET AL. Patent Interference No. 101,916

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)





Patent Interference No. 101,916

October 2, 1990


Before Boler, R. Smith and Sofocleous






R. Smith






Request for Reconsideration Under 37 CFR 1.640(c)


 Gerk requests reconsideration of the Examiner-in-Chief's (EIC's) decision dismissing Gerk's motion No. 5 "as unauthorized by the rules of practice."D' The motion (No. 5) was filed by Gerk under 37 CFR 1.633(c)(2) to redefine the interfering subject matter by "adding the party Cottringer et al.'s application S.N. 07/252,981 to the present interference."D' In his decision dismissing the motion, the EIC pointed out that neither § 1.633(c)(2) nor any other part of the interference rules permits a party to add an application of an opponent to an interference.



 The request for reconsideration is denied. Requests for reconsideration pursuant to 37 CFR 1.640(c) must specify with particularity the points believed to have been misapprehended or overlooked in rendering the decision. We have reviewed the EIC's decision in light of Gerk's request, but we are not persuaded that the EIC overlooked or misapprehended any points.



 Gerk's argument on page 3 of his request is that the motion is a proper motion under 37 CFR 1.633(c)(3) which authorizes motions "to redefine the interfering subject matter by ... (3) designating an application ... claim to correspond to a count....



 Gerk urges that nothing in § 1.633(c)(3) limits its applicability to claims in applications that are already involved in the interference. We note, however, that the motion was based on § 1.633(c)(2), and Gerk now urges that the motion was proper under § 1.633(c)(3). We decline to hold that the EIC overlooked an argument that was presented for the first time in the request for reconsideration and was not presented during the motion period. Moreover, we believe Gerk's argument is incorrect in any event. § 1.633(c)(3) relates to designating a claim to correspond to the count, and not to adding an application of an opponent, which is what Gerk seeks to accomplish. We believe that § 1.633(c)(3) implicitly is limited to designating claims to correspond to the count, which claims are in an involved application. Accordingly, the EIC was correct in our view in concluding that neither § 1.633(c)(2) nor any other interference rule authorizes a party to add an opponent's application to an interference. Moreover, the EIC's decision was consistent with that of the Commissioner in Theeuwes v. Bogentoft, 2 USPQ2d 1378 (Comm'r 1986) where it was held that the Theeuwes motion to add or substitute a copending application "does not fall within any of the provisions of 37 CFR 1.633, since that rule does not provide for any such motion by a party patentee."DD'



  *2 We note further that those rules which relate to the addition or substitution of an application, eg, § 1.633(d), which authorizes the substitution of an application owned by the party, and § 1.633(h), which authorizes the addition of an application for reissue, require that the movant show the patentability of all claims in the application to be substituted or added. 37 CFR 1.637(d)(3) and 1.637(h)(3). In contrast Gerk has not shown the patentability of all the claims in the application sought to be added, but rather urges to the contrary.



 Gerk also argues that the EIC has the authority under 37 CFR 1.610(e) to add the aforenoted Cottringer application even if it is found that 37 CFR 1.633(c)(3) does not authorize such action. Alternatively, Gerk urges that the EIC could have exercised his discretion under 37 CFR 1.642 to add an application to the interference. We disagree with the contention that the EIC could have granted the preliminary motion under § 1.610(e). Rather, as noted by the Commissioner in Theeuwes, supra, motions which fall into the category of preliminary motions are required to comply with § 1.633:

   "§ 1.633 would be rendered a nullity if every preliminary motion which did not comply with its requirements could avoid dismissal by being characterized as a motion under § 1.635."DD'



 § 1.610(e) relates to matters not specifically covered by the rules, and the Commissioner has plainly indicated that § 1.633 covers proper preliminary motions. The plain import of Theeuwes is that § 1.633 is present to prescribe just what preliminary motions may be filed, and if the requirements of § 1.633 could be avoided via a miscellaneous motion under § 1.635 or the EIC's discretion under § 1.610(e), then § 1.633 would be rendered a nullity.



 With respect to the EIC's discretion under § 1.642, Gerk does not indicate that he requested the EIC to exercise his discretion pursuant to § 1.642 in his motion. In any event the EIC in the exercise of his discretion pursuant to § 1.642 decided not to act to add the application. It must be kept in mind that in matters that are discretionary with the EIC the parties "are not entitled to be heard on the merits of the exercise of such discretion."D' Jacobs v. Moriarity, 6 USPQ2d 1799, 1802 (BPA & I 1988).



 Finally, Gerk urges that the EIC misapprehended or overlooked the strong public policy in favor of deciding all patentability issues that are fully and fairly raised in an interference, citing the Commissioner's order of May 23, 1990, 1115 O.G. 31, and Perkins v. Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed Cir.1989). We disagree with the contention that the EIC overlooked the policy reflected in the cited authorities. We note that both the Commissioner's order and the decision in Perkins related to patentability issues raised in involved applications. We find no suggestion in the cited authorities that patentability issues relating to applications not involved in an interference should be decided in the interference.






James R. Boler






Ronald H. Smith






Michael Sofocleous





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